Ex Parte Hyde et al

Patent Trial and Appeal Board

Sep 19, 2016

11478551 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111478,551 0612912006 Roderick A. Hyde
83722 7590 09/21/2016
Dorsey & Whitney I INVENTION SCIENCE FUND
Intellectual Property Department - SLC
136 S. Main Street
Keams Building, Suite 1000
Salt Lake City, UT 84101-1685
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
240636US01_501394-10 6683
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
09/21/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ip.docket.slc@dorsey.com
simon.marcus@dorsey.com
ip.patent.sl@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE, EDWARD K.Y. JUNG,
and LOWELL L. WOOD JR. 1
Appeal2014-005648
Application 11/478,551
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and RICHARD J.
SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a claims to a
method, computer program product, and system, all of which are directed to
synthesis of peptides. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Searete LLC. (Appeal
Br. 2.)
Appeal2014-005648
Application 11/478,551
STATEMENT OF THE CASE
Claims on Appeal
Claims 1-18, 21-31, 34--37, 42-58, and 61---67 are on appeal. 2
(Claims Appendix, Appeal Br. 32--43.) Claim 1 is illustrative and reads as
follows:
1. A method implemented by a computer having at least one processor
and memory storing instructions which, when executed by the at least one
processor, implement the method, the method comprising:
receiving a first input associated with a first possible dataset, the first
possible dataset including data representative of one or more aspects of
target peptide synthesis;
determining temporal-spatial parameters for one or more of
sequentially co-localizing one or more target components including two or
more different types of charged tRNA for synthesizing one or more peptides
based on the first possible dataset or separating the one or more target
components including the two or more different types of charged tRNA
based on the first possible dataset; and
at least partially based on the determined temporal-spatial parameters,
causing the two or more different types of charged tRNA in corresponding
computer-controlled supplies of charged tRI'LA .. to individually sequentially
flow through corresponding fluid flow apparatus components of the peptide
synthesis apparatus to a synthesis receptacle thereof, with excess charged
tRNA of a first type of the two or more different types of charged tRNA
being removed from the synthesis receptacle before a subsequent second
type of the two or more different types of charged tRNA is flowed to the
synthesis receptacle, in order to synthesize the one or more peptides.
2 Claim 68 is withdrawn as being directed to a non-elected invention. (Final
Act. 3, dated April 11, 2013.)
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Appeal2014-005648
Application 11/478,551
Examiner's Rejections
1. Claims 1-18, 21-31, 34--37, 42-58, and 61---67 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Menninger,3 as evidenced by
Translation4 and Kelly, 5 and Evans,6 as evidenced by Srienc.7 (Final Act.
4.)
2. Claim 61 stands rejected on the ground of nonstatutory obviousness-
type double patenting over claim 1 of U.S. Patent No. 7,993,873 B2.8 (Id. at
15-16.)
3. Claim 61 stands rejected on the ground of nonstatutory obviousness-
type double patenting over claim 1 of U.S. Patent No. 7,858,342 B2.9 (Id. at
16-17.)
4. Claim 61 stands rejected on the ground of nonstatutory obviousness-
type double patenting over claims 1 and 4 of U.S. Patent No. 7,816,101
B2. 10 (Id. at 17.)
5. Claims 1 and 3 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims [1 and 2] and 3 of U.S.
Patent No. 7,879,974 B2 11 in view of Evans. (Id. at 17-18.)
3 Menninger, Computer Simulation of Ribosome Editing, J. Mol. Biol. 171,
383-99 (1983) ("Menninger").
4 Definition of Translation, Collins Dictionary of Biology (2005)
("Trans la ti on").
5 Kelly, Mainframe Graphics on a Microcomputer, BYTE 339--442 (Oct.
1983).
6 Evans et al., WO 2004/104178 A2, published Dec. 2, 2004 ("Evans").
7 Srienc et al., US 6,555,360 Bl, issued April 29, 2003 ("Srienc").
8 Hyde et al., US 7,993,873 B2, issued Aug. 9, 2011 ("the '873 patent").
9 Hyde et al., US 7,858,342 B2, issued Dec. 28, 2010 ("the '342 patent").
10 Hyde et al., US 7,816,101 B2, issued Oct. 19, 2010 ("the '101 patent").
11 Hyde et al., US 7,879,974 B2, issued Feb. 1, 2011 ("the '974 patent").
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Application 11/478,551
6. Claim 1 and 3 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims [1 and 2] and 3 of U.S.
Patent No. 7,888,465 B2. 12 (Id. at 19.)
7. Claim 1 and 3 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1, 2, and 47 of U.S. Patent
No. 7 ,754,854 B2. 13 (Id. at 19-20.)
DISCUSSION
Rejection No. 1
Issue: 35 U.S.C. § 103(a)
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
Analysis
The Examiner cites Menninger for teaching the procedures for
simulating protein synthesis from RNA. (Final Act. 5.) In addition, the
Examiner cites Menninger as teaching that "the first input corresponds to a
random number, which is associated with the RNA that is representative of
the input (i.e. peptidyl) tRNA sequences. Through use of this input value,
spatial ... and temporal ... parameters are determined" for synthesizing
proteins. (Id.) However, the Examiner states that "Menninger does not
teach use of charged tRNA and the flowing algorithm" recited in the claims.
(Id. at 6.)
12 Hyde et al., US 7,888,465 B2, issued Feb. 15, 2011 ("the '465 patent").
13 Hyde et al., US 7,754,854 B2, issued July 13, 2010 ("the '854 patent").
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Appeal2014-005648
Application 11/478,551
The Examiner cites Evans for teaching the use of flow cytometry to
sort biomolecules. (Id.) In particular, the Examiner states that
(Id.)
It is noted that Figures 1 and 3 of Evans [] teach[] a flow
cytometer apparatus wherein these different "charged tRNA
molecules" sequentially and individually flow through the
apparatus (i.e. label 22) to receptacles (i.e. label 21 ). It is noted
that Figure 3 of Evans [] teaches a plurality of "synthesis
receptacles." It is interpreted that the sorting process of the
abstract of Evans [] puts analogous biomolecules in [the] same
groups and removes/separates non-analogous (i.e. "excess") sets
of biomolecules from each analogous set of biomolecules.
While not challenging the Examiner's reliance on Menninger,
Appellants argue that the Examiner did not demonstrate that Evans teaches
or suggests "causing the two or more different types of charged tRNA in
corresponding computer-controlled supplies of charged tRNA to
individually sequentially flow through corresponding fluid flow apparatus
components of the peptide synthesis apparatus to a synthesis receptacle
thereof' or "excess charged tRNA of a first type of the two or more different
types of charged tRNA being removed from the synthesis receptacle before a
subsequent second type of the two or more different types of charged tRNA
is flowed to the synthesis receptacle, in order to synthesize the one or more
peptides."14 (Appeal Br. 15.) That is, according to Appellants, Evans does
not teach the "flowing algorithm" that the Examiner states is not taught by
Menninger.
The Examiner bears the initial burden of establishing a prima facie
14 The quoted text is from independent claims 1, 54, and 61, with emphasis
by Appellants. (See Appeal Br. 32, 40, and 42.)
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Appeal2014-005648
Application 11/478,551
case of obviousness, and has not done so. See Jn re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). In this case, the Examiner does not provide a clearly
articulated "reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
While Evans teaches the sorting of biomolecules, including tRNA, we
agree with Appellants that "it is unclear how the Examiner's allegations
apply to the claimed subject matter" (Appeal Br. 14) and, in particular, that
the Examiner's reasoning does not articulate how Evans, in combination
with Menninger, Translation, Kelly, and Srienc, teaches the "flowing
algorithm" as claimed. Accordingly, Rejection No. 1 is reversed.
Conclusion of Law
A preponderance of evidence of record fails to support the Examiner's
conclusion that claims 1-18, 21-31, 34--37, 42-58, and 61---67 are obvious
under 35 U.S.C. § 103(a).
Rejection Nos. 2-7
Issue: Obviousness-type double patenting
Whether a preponderance of evidence of record supports the
Examiner's conclusions of nonstatutory obviousness-type double patenting.
Principles of Law
Obviousness-type double patenting prohibits the issuance of claims in
a second patent that are "not patentably distinct from the claims of the first
patent." In re Langi, 759 F.2d 887, 892 (Fed. Cir. 1985) (citations omitted).
"A later patent claim is not patentably distinct from an earlier patent claim if
the later claim is obvious over, or anticipated by, the earlier claim." Eli Lilly
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Application 11/478,551
& Co. v. Barr Labs., Inc., 251F.3d955, 968 (Fed. Cir. 2001) (citations
omitted).
Analysis
As to each of Rejections Nos. 2-7, the Examiner points to specific
elements or limitations of claim 61 (Rejections 2--4) or claims 1 and 3
(Rejections 5-7) that are found in the cited claims of the respective patents.
(Final Act. 14--20.) Appellants do not challenge the merits of Rejection Nos.
2-7; rather, Appellants argue that they constitute "mere conclusory
statements" or "general allegations." (Appeal Br. 29-30.)
We are not persuaded by Appellants' arguments. The Examiner's
rejections put Appellants on notice of the bases upon which the Examiner
concluded that claims 1, 3, and 61 were not patentably distinct from the
respective earlier patent claims, and Appellants failed to articulate any
substantive reason why they believe claims 1, 3, or 61 are patentably distinct
from those earlier patent claims. See In re Jung, 637 F.3d 1356, 1362---63
(Fed. Cir. 2011.) Moreover, because Appellants provided no arguments on
the merits, Rejection Nos. 2-7 are affirmed.
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
conclusion that claim 61 is unpatentable on the ground of nonstatutory
obviousness-type double patenting over (a) claim 1 of the '873 patent, (b)
claim 1 of the '342 patent, and ( c) claims 1 and 4 of the '101 patent.
A preponderance of evidence of record supports the Examiner's
conclusion that claims 1 and 3 are unpatentable on the ground of
nonstatutory obviousness-type double patenting over (a) claims [1 and 2]
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Application 11/478,551
and 3 of the '974 patent, (b) claims [1 and 2] and 3 of the '465 patent, and
( c) claims 1, 2, and 4 7 of the '854 patent.
SUMMARY
We reverse the rejection of claims 1-18, 21-31, 34--37, 42-58, and
61-67 under 35 U.S.C. § 103(a).
We affirm the rejection of claim 61 on the ground of nonstatutory
obviousness-type double patenting over (a) claim 1 of the '873 patent, (b)
claim 1 of the '342 patent, and ( c) claims 1 and 4 of the '101 patent.
We affirm the rejection of claims 1 and 3 on the ground of
nonstatutory obviousness-type double patenting over (a) claims [1 and 2]
and 3 of the '974 patent, (b) claims [1 and 2] and 3 of the '465 patent, and
( c) claims 1, 2, and 4 7 of the '854 patent.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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